The War on Patent Trolls -- Congress Prepares for Battle

In case it was not clear that Congress is serious about combatting the perceived problem of "patent trolls," Sen. Patrick Leahy (Vermont) and Sen. Mike Lee (Utah) published an opinion piece this week on the POLITICO.com website, which is now entitled "America's Patent Problem." Both Senators are members of the Senate Judiciary Committee, chaired by Sen. Leahy (at right), the committee which has jurisdiction over patents, copyrights, and trademarks. The article started from the premise that there are patent holders that are abusing the system, and that this abuse has resulted in a drag on the economy. The example of "patent misuse" that the article highlighted is a patent holder that insists that Wi-Fi routers infringe its patents. Sen. Leahy and Sen. Lee (below) took the position that, even if this patent holder's infringement allegations are legitimate, it should only be allowed to sue the companies that make and sell the routers, not the small businesses that are using these routers. But, the small business examples to which the authors pointed included "hotels or small coffee shops" -- entities which others have referred to as "end-users" of the technology. It is hard to believe, though, that these small businesses are using these routers for non-commercial purposes. Even if the "hotels and coffee shops" don't charge their customers for the use of the Wi-Fi, it is almost certain that they seek to attract customers with the service. More importantly, a patent holder's rights are not limited to preventing the making and selling of a patented product. Instead, 35 U.S.C. § 271(a) provides that "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent" (emphasis added). Thus, it is unclear what the justification is for excluding such "end-users" in this case, especially when the "end-users" is more likely than not using this technology for commercial purposes. The Senators did not provide an answer.

To be fair, we are not taking any position on the merits of the case to which this example refers. Indeed, the Senators themselves did not provide any specifics; for example, no parties or patent numbers are cited. Instead, Senators Leahy and Lee focused on the fact that certain patent holders are targeting small businesses for the sole reason that the cost of settling can be far less than defending against a lawsuit. This may be true. However, it is difficult to distinguish between such alleged tactics and the licensing efforts of "legitimate patent holders." Instead, the authors concluded (without much explanation) that "this misuse of the patent system" does not belong to "the patent system provided for in our Constitution."

But is this true? Not if an article that appeared on the Forbes website on Tuesday is to be believed. Former undersecretary of commerce and director of the U.S Patent and Trademark Office Jon Dudas (at right), and author of the book "Rembrandts in the Attic," David Kline, wrote a piece entitled "Thank the Founding Fathers for the Open Market in Patents." Contrary to the sentiment expressed by Senators Leahy and Lee, and almost every report in the mainstream press, Mr. Dudas and Mr. Kline (below) explained that the founding fathers not only anticipated non-practicing entities, they encouraged them. Of course, these are the same founding fathers that provided for a patent system in the Constitution, and helped to draft that first patent act. The authors pointed out that the young American economy needed a kick-start because, at that time, "the U.S. had a lower standard of living than many South American countries." The founders looked to the British patent system, but according to Bowdoin College historian Zorina Khan, this system had high fees ("11 times the per capita income of the average citizen") and a working requirement (they had to practice the invention). The article continued by citing the work of historians Naomi Lamoreaux from Yale and the late Kenneth Sokoloff of UCLA, who explained that the founders wanted to design a system that would "stimulate the inventive genius and entrepreneurial energy of the common man," even if such individuals could not commercialize their own inventions. They accomplished this by instituting fees much lower than in Britain, not imposing a working requirement, and by expressly allowing the sale and licensing of patent rights. The article continued to cite the work of professors Lamoreaux and Sokoloff, who explained that new intermediaries (think non-practicing entities) "'lowered the transaction costs and improved the efficiency' of the trade in and commercialization of patented technology." Mr. Dudas and Mr. Kline concluded that this system, which is currently embodied by universities and industry NPEs, has sparked many new products and businesses over years.

Mr. Dudas and Mr. Kline warned, therefore, that not all non-practicing entities should be lumped together into the designation of "Patent Troll." Nevertheless, this appears to be exactly what Congress is doing. Senators Leahy and Lee explained that their committee is working "on a bipartisan basis" to address this so-called Patent Troll problem. In addition, they are coordinating with the Representative Bob Goodlatte, chairman of the House Judiciary Committee. The stated goal for this legislation is to "make it harder for bad actors to succeed, while preserving what has made America's patent system great." Of course, that is easier said than done, and the difficulty is narrowly crafting such legislation to specifically address the perceived problem without also ensnaring all of the so-call "legitimate patent holders," or without introducing unexpected negative consequences for the patent system as a whole. Some of the suggested legislation includes increasing transparency of patent ownership, protecting the end-users when the manufacturers should be the real defendants, and improving the process for reviewing patents at the Patent Office (although it is unclear why Sen. Leahy did not mention the post-issuance review procedures of the Leahy-Smith America Invents Act in his article). We have previously reported on some of the proposed legislation, and we will continue monitor and report on the activity of Congress. It is likely that with so much momentum and apparent public support, there will probably be some sort of bill passed in the next year or so. We can only hope that in doing so, Congress does not toss out the proverbial baby with the bathwater.

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